G.R. No.

L-48226 December 14, 1942

ANA L. ANG, petitioner,
vs.
TORIBIO TEODORO, respondent.

FACTS:
Respondent Toribio Teodoro has continuously used "Ang Tibay," both as a trade-mark
and as a trade-name, in the manufacture and sale of slippers, shoes, and indoor
baseballs since 1910. On September 29, 1915, he formally registered it as trade-mark and
as trade name on January 3, 1933.

Petitioner Ana Ang registered the same trade-mark "Ang Tibay" for pants and shirts on
April 11, 1932, and established a factory for the manufacture of said articles in the year
1937.

The Court of First Instance of Manila absolved the defendant (Ms. Ang) on the grounds
that the two trademarks are dissimilar and are used on different and non-competing
goods; that there had been no exclusive use of the trade-mark by the plaintiff; and that
there had been no fraud in the use of the said trade-mark by the defendant because the
goods on which it is used are essentially different from those of the plaintiff.

The Court of Appeals reversed said judgment, directing the Director of Commerce to
cancel the registration of the trade-mark "Ang Tibay" in favor of petitioner, and
perpetually enjoining the latter from using said trade-mark on goods manufactured and
sold by her.

ISSUE:
Are the goods or articles or which the two trademarks are used similar or belong to the
same class of merchandise?

RULING:
YES, pants and shirts are goods closely similar to shoes and slippers. the test employed
by the courts to determine whether noncompeting goods are or are not of the same class
is confusion as to the origin of the goods of the second user. Although two
noncompeting articles may be classified under two different classes by the Patent Office
because they are deemed not to possess the same descriptive properties, they would,
nevertheless, be held by the courts to belong to the same class if their simultaneous use
on them of identical or closely similar trade-marks would be likely to cause confusion
as to the origin, or personal source, of the second user's goods. They would be
considered as not falling under the same class only if they are so dissimilar or so foreign
to each other as to make it unlikely that the purchaser would think the first user made
the second user's goods.
Supreme court added that there can be unfair competition or unfair trading even if the
goods are non-competing, and that such unfair trading can cause injury or damage to
the first user of a given trade-mark, first, by prevention of the natural expansion of his
business and, second, by having his business reputation confused with and put at the
mercy of the second user. Then noncompetitive products are sold under the same mark,
the gradual whittling away or dispersion of the identity and hold upon the public mind
of the mark created by its first user, inevitably results. The original owner is entitled to
the preservation of the valuable link between him and the public that has been created
by his ingenuity and the merit of his wares or services. Experience has demonstrated
that when a well-known trade-mark is adopted by another even for a totally different
class of goods, it is done to get the benefit of the reputation and advertisements of the
originator of said mark, to convey to the public a false impression of some supposed
connection between the manufacturer of the article sold under the original mark and
the new articles being tendered to the public under the same or similar mark. As trade
has developed and commercial changes have come about, the law of unfair competition
has expanded to keep pace with the times and the element of strict competition in itself
has ceased to be the determining factor. The owner of a trade-mark or trade-name has a
property right in which he is entitled to protection, since there is damage to him from
confusion of reputation or goodwill in the mind of the public as well as from confusion
of goods. The modern trend is to give emphasis to the unfairness of the acts and to
classify and treat the issue as a fraud.